WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Press Association Limited v. FIG Vietnam

Case No. D2008-1269

1. The Parties

The Complainant is The Press Association Limited, of the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Gill Jennings & Every, of the UK.

The Respondent is FIG Vietnam, of Viet Nam, represented by ESQwire.com Law Firm, of the United States of America.

2. The Domain Name and Registrar

The disputed domain name <pressassociation.com> (“Disputed Domain Name”) is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2008. On August 20, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Name. On August 21, 2008 Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2008. The Response was filed with the Center on September 11, 2008.

The Center appointed Alistair Payne as the sole panelist in this matter on September 19, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is The Press Association Limited, a company incorporated in the UK. The Complainant filed its application to register the trade mark THE PRESS ASSOCIATION in the Office of Harmonization in the Internal Market on December 8, 2000. The Complainant is the proprietor of the domain name <thepressassociation.com>. The Complainant is the UK’s national news agency and supplies national and regional newspaper and broadcasters within the UK, its services include the gathering and dissemination of information obtained by its own journalists, freelancers and third parties. This information includes but is not limited to UK news and general foreign news, sports news and data, financial news, weather information and entertainment listings.

The Respondent is FIG Vietnam. The Respondent registered the domain name <pressassociation.com> on January 29, 1999.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that The Press Association is the UK’s National News Agency and supplies every national and regional newspaper and broadcaster within the UK and it also has a significant industry presence outside of the UK. The Complainant claims that the mark THE PRESS ASSOCIATION was first used in 1868 and the mark has been in continuous use since this date.

The Complainant considers the domain name <pressassociation.com> to be identical in all material aspects to the mark THE PRESS ASSOCIATION in which the Complainant claims to have both registered and unregistered rights.

The Complainant believes the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has registered the domain name <pressassociation.com> for the purpose of attracting, for commercial gain, Internet users to the Respondent’s website and that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Complainant asserts that it has accrued substantial goodwill and reputation in the mark THE PRESS ASSOCIATION and by providing links via the Disputed Domain Name, the Respondent is taking advantage of the Complainant’s goodwill and reputation for personal benefit.

The Complainant argues that the Respondent has a history of registering domain names in bad faith. Finally, the Complainant submits that the Respondent offered the domain name for sale at a price in excess of out-of-pocket expenses which is further evidence of registration and use in bad faith.

B. Respondent

The Respondent asserts that the Disputed Domain Name was registered on January 29, 1999, more than a year and a half before the Complainant filed its trademark application for THE PRESS ASSOCIATION. The Respondent argues that a complainant must have trademark rights that predate the registration of a disputed domain to support a claim under the Policy, therefore the Complainant must demonstrate that it had common law trade mark rights prior to the registration date of the Disputed Domain Name.

The Respondent argues that it is necessary for the Complainant to present evidence of “secondary meaning” in order to establish common law trade mark rights in a descriptive term such as “the press association”.

The Respondent asserts that it has a legitimate interest in the Disputed Domain Name by its use in connection with a bona fide offering of goods and services in the nature of pay-per-click ads related to the descriptive meaning of the term “press association”.

As the registration of the Disputed Domain Name predated the Complainant’s filing of its trade mark application the Respondent argues that it could not have had knowledge that the Complainant was claiming trade mark rights to the term “press association” therefore there was no bad faith in registration of the domain name.

6. Discussion and Findings

A. UDRP Elements

If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.

B. Identical or Confusingly Similar

The Disputed Domain Name was registered on January 29, 1999 more than a year and a half before the Complainant filed its trademark application for THE PRESS ASSOCIATION. However, registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. Paragraph 4(a)(i) of the Policy makes no specific reference to the date on which the owner of the trade or service mark acquired rights. The fact that the Disputed Domain Name predates the Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to paragraph 4(a)(iii), which is considered below. This has been found by numerous panels: Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov,
WIPO Case No. D2003‑0527; Iogen Corporation v. IOGEN,
WIPO Case No. D2003‑0544; and MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598. It is therefore possible for the Panel to examine whether there is an identity or a confusing similarity.

The Complainant has submitted evidence in the form of independent witness statements attesting to the notoriety of THE PRESS ASSOCIATION, promotional items showing products and services referred to under the mark, also evidence of the company’s turnover under the mark from 1973-2006/7 and extracts from journals and books commenting on the existence and use of the mark. Therefore, in any event, the Complainant has provided sufficient evidence of secondary meaning in the mark THE PRESS ASSOCIATION to establish common law trade mark rights.

The Disputed Domain Name differs from the trade mark THE PRESS ASSOCIATION only by the absence of the definite article “the” and the addition of the generic top level domain “.com”. In Belo Corp v. George Latimer,WIPO Case No. D2002-0329 the panel held that:

“mere deletion (or addition) of the article “the” within a mark does not constitute a substantive change or obviate confusion.”

The panel in that case also held that:

“it is well established that the generic top-level domain, in this case “.com,” must be excluded from consideration as being a generic or functional component of the Domain Name.”

Therefore, in the Panel’s view, the Disputed Domain Name is confusingly similar to the Complainant’s mark for the purposes of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is the Complainant’s burden to prove that Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Because it is difficult to produce evidence to support a negative statement, the threshold for the Complainant to prove a lack of legitimate interest is that a prima facie case must be shown which then shifts the burden of proof to the Respondent who must demonstrate its rights or legitimate interests in the Disputed Domain Name to the Panel.

It is generally regarded as sufficient prima facie proof, for a complainant to show that the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. In this case, the Panel has found that the Disputed Domain Name is confusingly similar to the mark in which the Complainant has rights. There is no suggestion of the Respondent, or any business or organization operated by the Respondent, being commonly known by the Disputed Domain Name and the Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the Complainant’s trademark or any expression confusingly similar thereto.

In the Panel’s opinion the Complainant in this proceeding has demonstrated a prima facie case. The question for the Panel to now determine is whether the Respondent can demonstrate rights or legitimate interests in the Disputed Domain Name.

In essence, the Respondent’s case is that the Disputed Domain Name is descriptive or generic, and that it was perfectly legitimate for the Respondent to register and use the Disputed Domain Name in the course of its business of offering targeted advertising links. The Respondent submits that it registered the Disputed Domain Name simply because of its attractiveness as a common or descriptive expression, and not because of its value as a trade mark, and that using dictionary words or descriptive expressions in that manner to generate pay-per-click advertising links related to the generic nature of such an expression, is permissible under the Policy. The Respondent contends that the name “press association” was chosen for a descriptive purpose, namely to display advertisements on its website for bona fide offering of goods and services related to various forms of media and agencies that print and broadcast news and commercial advertisements. The Respondent further contends that the Disputed Domain Name contains links to other websites associated with the word “press association” and that the registration of common words as domain names, can be legitimate under the Policy if the advertising and said links are clearly and directly related to the common word. The Respondent has cited the following cases amongst others in support of his argument, TheLandmark Group v. DigiMedia.com, L.P., NAF Case No. FA285459; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; and Dial-A-Mattress Operating Corp. v. Ultimate Search,
WIPO Case No. D2001‑0764. The Respondent says that it registered (and had been using) the Domain Name for such purposes, long before it received notice of the present dispute. It submits that this is sufficient to establish a legitimate interest in the Disputed Domain Name under paragraph 4(c)(i) of the Policy.

In this regard the Panel accepts the principle that if the word in question is generic and the domain name was not registered with a trade mark in mind, the use of a domain name for a website consisting of pay-per-click advertising which is truly based on the generic value of the word at issue might in the circumstances be bona fide.

Had the Respondent in fact chosen the Disputed Domain Name because of its attractiveness as a generic or descriptive expression, one would have expected to find links at the Respondent’s website which are related to that claimed meaning. In this case, although there are links which include the words “press” or “association” there are also various links as one clicks through the site relate to a wide variety of goods and services including plasma TVs, digital cameras, machine tools and mixers. There is no descriptive relationship between the domain name <pressassociation.com> and the vast majority of goods and services advertised on the pages. The Panel is doubtful that the words “press association” are descriptive for services that involve the downloading of ring tones and women’s clothing.

The Panel finds on a balance of probability, that Respondent has not demonstrated its rights to or legitimate interests in the Disputed Domain Name. Previous panels have recognized that the mere registration of a domain name does not of itself give rise to rights or legitimate interests in that domain name for the purpose of paragraph 4(a)(ii) of the Policy. See e.g.Educational Testing Service v. TOEFL,
WIPO Case No. D2000‑0044; Pharmacia & Upjohn Company v. Peoples Revolutionary Suicide Jazz Band, WIPO Case No. D2000-0816; and AT&T Corp. v. Swarthmore Associates LLC, WIPO Case No. DBIZ2002-00077.

Therefore, the Complainant has, in the Panel’s view satisfied paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) the [respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Several panels have found, in previous decisions, that when a domain name is registered before a trademark right is established, the domain name was most likely not registered in bad faith because the registrant could not have contemplated the complainant’s non-existent rights. Examples hereof are: John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; and PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182.

However, the panel held in Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112 that there are certain situations when a respondent is clearly aware of a complainant, and it is clear that the aim of the registration was to take advantage of the potential for confusion between the domain name and any of the complainant’s potential rights. In these cases, bad faith can be found. This could occur when a respondent is aware of a complainant’s potential rights and registers the domain name to take advantage of any rights that may arise from a complainant’s enterprises.

The Respondent registered the domain name in dispute on January 29, 1999 more than nine years prior to the date on which this proceeding was commenced.

The Complainant submitted that it is more likely than not that the Respondent was aware of the Complainant’s common law mark when the Respondent registered the Disputed Domain Name in 1999. The Complainant asserts that THE PRESS ASSOCIATION was first used in 1868 and the mark has been in continuous use since this date. The Complainant has also submitted evidence in the form of independent witness statements attesting to the notoriety of THE PRESS ASSOCIATION, promotional items showing products and services referred to under the mark, also evidence of the company’s turnover under the mark from 1973-2006/7 and extracts from journals and books commenting on the existence and use of the mark.

The submission of the Respondent is that it had no knowledge of the Complainant’s alleged common law trade mark when it registered the Disputed Domain Name. The Respondent states that it registered the Disputed Domain Name because it incorporated a common term. To support this statement, Respondent submits a list of similar “___association.com” styled domain names incorporating other common terms such as “banker”, “coffee”, and “camp” that it registered. Indeed, Respondent affirms in its Response that it has registered over one thousand domain names. As such, Respondent may be considered a “domainer.” Such bulk registration of domain names and any attendant duties has been discussed as in several cases noted below.

It was held by the panel in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448 that those who register domain names, and particularly those who register domain names in large numbers are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners. That responsibility derives from paragraph 2 of the Policy, and in particular the words: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. It seems from a number of panel decisions which have addressed the application of paragraph 2 that people who make a living from registering vast numbers of domain names must make reasonable efforts to ensure that they are not infringing on the trademark rights of others. In Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, the panel found that the respondent who carried out a business of registering multiple domain names and purchasing lapsed domain names, was not entitled to shield its conduct by “closing its eyes” to whether the domain names it was registering were identical or confusingly similar to a third party’s trade marks.

The three-member panel in mVisible Technologies Inc. v. Navagation Catalyst Systems, Inc., WIPO Case No. D2007-1141 adopted an even stronger position on the obligations of professional domainers in the discharge of their obligations under paragraph 2 of the policy. The panel in that case said:

“Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”

[…] “an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trademark application or registration.[…] Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term.

Searching of this kind is particularly appropriate for companies that operate [pay-per-click] landing pages. […] In this context, registrants that run [pay-per-click] landing page businesses cannot be willfully blind to whether domain names they register are similar to trademarks and are pulling up [pay-per-click] advertising related to those trademark rights. […] it is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the [pay-per-click] landing page business, must have been aware of the relevant trademark.”

As discussed earlier the Panel finds that the Complainant has demonstrated secondary meaning in relation to THE PRESS ASSOCIATION, at least in the UK. Further the Panel notes that the Complainant is the most popular result on a google search for “press association” and acknowledges that this along with the evidence provided by the Complainant as to the extent of use of the mark THE PRESS ASSOCIATION means that it is reasonable to infer that the Respondent must have been aware of the Complainant’s trade mark when registering the Domain Name.

This Panel finds it likely and is prepared to infer that the Respondent registered the Domain Name with the Complainant specifically in mind, with the intention of taking advantage of the Complainant’s goodwill and reputation to collect the click-through revenue that a site of this nature would generate. The Respondent appears to have intentionally attempted to attract for commercial gain Internet users to the Respondents website by creating a likelihood of confusion with the Complainant’s mark which is evidence of the registration and use of a domain name in bad faith under paragraph 4(b)(iv) of the Policy. Also the links to pornographic websites and the fact that the Respondent has been the respondent party in four other domain name dispute procedures and in all such cases the disputed domain names have been transferred to the relevant complainant are further evidence of use in bad faith.

The Respondent submits that it is not responsible for the sponsored links appearing on the Respondent’s website. It says that those links were chosen by Parked.com, without its knowledge or input. The Panel does not accept that the Respondent can disclaim responsibility for the various links on the Respondent’s website. The Panel respectfully agrees with the panelist in Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter,WIPO Case No. D2007-1254 where it was found that the respondent was “ultimately accountable for the use of the Domain Names, even if an employee (or, more likely, an algorithm) of an online affiliate advertising network selected the particular advertisements to display”. Also the decision of the panel in NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079, where the panel held that “the Respondent cannot escape responsibility for the advertising on the Respondent’s website, on the basis that it was generated by Google without any involvement on the Respondent’s part.” The Panel in the NVT Birmingham case approved the following statement from the decision of the three-member Panel in Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381:

“Although the web pages were automatically generated by DomainSponor’s software on the basis of searches made by visitors, this system is inherently likely to result in the display of sponsored links in the field in which a company whose mark corresponds to the domain name is active, including that company’s competitors. It is thus a system which is likely to enable the registrant to obtain click-through commissions from the diversion of internet users who are confused where (as here) the second level domain (“SLD”) is identical to the mark of a company which has been used on a substantial scale for a number of years.

The Respondent is ultimately responsible for the content of the website generated by DomainSponsor’s technology.”

Finally the Respondent claims that the fact that the Complainant waited nine years following the Respondent’s registration of the Disputed Domain Name to make a complaint raises an inference that the Complainant did not genuinely believe the Respondent was acting in bad faith.

“that the defence of laches had no application to proceedings under the Policy on the basis that the latter were not equitable in character, but were brought pursuant to the domain registration agreement of which the Policy was a part.”

The panel further held that irrespective of the availability of a defence of laches it:

“would still not have been inclined to find that it applied, in the absence of evidence from the Respondent as to the detriment it would now suffer if a transfer were to be ordered.”